USPTO Patents Application 09498725

United States Patent and Trademark Office

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Ofiicc
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450

Alexandria, Virginia 22313-1450
www.uspto.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

09/498,725

02/07/2000

Raja Tuli

7590 10/13/2004

JAMES C. SCHELLER, JR
BLAKELY, SOKOLOFF, TAYLOR &
ZAFMAN LLP

12400 WILSHIRE BOULEVARD, 17TH FL
LOS ANGELES, CA 90025

9222

EXAMINER

CARDONE, JASON D

ART UNIT

PAPER NUMBER

2145

DATE MAILED: 10/13/2004

Please find below and/or attached an Office conununication concerning this application or proceeding.

PTO-90C (Rev. 10/03)

Office Action Summary

Application No.

09/498.725

Applicant(s) < jy/

TULI, RAJA /

Examiner

Jason D Cardone

Art Unit

2145

The MAILING DATE of this communication appears on the cover sheet with the correspondence address -
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM
THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 .136(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered tlnnely.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1.704(b).

Status

1 )KI Responsive to connmunication(s) filed on 02 July 2004 .
2a)K This action is FINAL. 2b)n This action is non-final.

3) n Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 O.G. 213.

Disposition of Claims

4) 13 Claim(s) 21-28,41-48 and 61-74 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) 0 Claim(s) is/are allowed.

6) IEI Claim(s) 21-28A1-48 and 61-74 is/are reiected.

7) n Claim(s) is/are objected to.

Claim(s) are subject to restriction and/or election requirement.

Application Papers

9)0 The specification is objected to by the Examiner.

10)^ The drawing(s) filed on 15 December 2003 is/are: a)^ accepted or b)\Z\ objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a).

Replacement drawing sheet(s) including the correction Is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
1 1 )□ The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-1 52.

Priority under 35 U.S.C, § 119

12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
a)n All b)n Some * c)^ None of:

1 -□ Certified copies of the priority documents have been received.

20 Certified copies of the priority documents have been received in Application No. .

3.n Copies of the certified copies of the priority documents have been received in this National Stage
application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

Attach ment(s)

1 ) □ Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-413)

2) C] Notice of Draftsperson's Patent Drawing Review (PTO-948) Paper No(s)/Mall Date. .

3) O Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08) 5) Q Notice of Infomnal Patent Application (PTO-152)

Paper No(s)/Mail Date . 6) □ Other: ,

U.S. Patent and Trademark Office
PTOL-326 (Rev. 1-04)

Office Action Summary

Part of Paper No./Mail Date 20041008

Application/Control Number: 09/498,725
Art Unit: 2145

Page 2

DETAILED ACTION

1 . This action is responsive to the remarks of the applicant, filed on 7/2/04. Claims
21-28, 41-48 and 61-74 are presented.

Double Patenting

2. The nonstatutory double patenting rejection is based on a judicially created
doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
unjustified or improper timewise extension of the "right to exclude" granted by a patent
and to prevent possible harassment by multiple assignees. See In re Goodman, 1 1
F.3d 1046. 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887. 225

USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA
1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and. In re Thorington,
418 F.2d 528, 163 USPQ 644 (CCPA 1969).

A timely filed terminal disclaimer in compliance with 37 CFR 1 .321 (c) may be
used to overcome an actual or provisional rejection based on a nonstatutory double
patenting ground provided the conflicting application or patent is shown to be commonly
owned with this application. See 37 CFR 1 .130(b). Effective January 1 , 1994. a
registered attorney or agent of record may sign a terminal disclaimer, A terminal
disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).

3. Claims 21-28, 41-48, and 61-74 are rejected under the judicially created doctrine
of obviousness-type double patenting as being unpatentable over clainns 1-17 of U.S.
Patent No. 6,633,314 and claims 1-9 of U.S. Patent No. 6.690.403. Although the
conflicting claims are not identical, they are not patentably distinct from each other
because they claim the same subject matter. The patents substantially disclose the
instant claims of the application but do not specifically disclose the remote document as
a virtual desktop. It would have been obvious to one of ordinary skill in the art. at the
time the invention was made, to describe the remote document as a virtual desktop,

since a user through images manipulates them both.

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Art Unit: 2145

4. Applicant's arguments filed 7/2/04 have been fully considered but they are not
persuasive.

5. (A) USPN 6,690,403 and 6,633,314 do not disclose the limitation a virtual
desktop. A graphical desktop environment as a graphical user interface for a user to
control a computer is substantially different from a web document.

As to point (A), the patents do disclose an image, from the server, at which a
user input can be accepted for an operation at the server [6,690,403 claim 4 and
6,633,314 claim 13]. It is noted that the features upon which applicant relies (i.e.,
"graphical user interface") are not recited in the rejected claim(s). See In re Van Geuns,
988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Therefore, the virtual desktop can
be shown as a document, which a user input can be accepted for an operation at the
server. It would have been obvious to one of ordinary skill in the art, at the time the
invention was made, to describe the remote document as a virtual desktop, since a user
through images manipulates them both.

Conclusion

6. THIS ACTION IS MADE FINAL Applicant is reminded of the extension of time
policy as set forth in 37 CFR 1 .1 36(a). A shortened statutory period for reply to this final
action is set to expire THREE MONTHS from the mailing date of this action. In the
event a first reply is filed within TWO MONTHS of the mailing date of this final action
and the advisory action is not mailed until after the end of the THREE-MONTH
shortened statutory period, then the shortened statutory period will expire on the date

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Art Unit: 2145

the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be
calculated from the mailing date of the advisory action. In no event, however, will the
statutory period for reply expire later than SIX MONTHS from the mailing date of this
final action.

7. Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Jason D Cardone whose telephone number is (703)
305-8484. The examiner can normally be reached on Mon.-Thu. (9AM-6PM).

If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor. Jack Harvey can be reached on (703) 305-9705. The fax phone number for
the organization where this application or proceeding is assigned is 703-872-9306.

Information regarding the status of an application may be obtained from the
Patent Application Information Retrieval (PAIR) system. Status information for
published applications may be obtained from either Private PAIR or Public PAIR.
Status information for unpublished applications is available through Private PAIR only.
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
you have questions on access to the Private PAIR system, contact the Electronic
Business Center (EBC) at 866-217-9197 (toll-free).

Art Unit 2145

October 8. 2004